Intellectual Property Matters – April 2016
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Richard Prince – an update
We have previously reported on the artist Richard Prince and the disputes surrounding his controversial […]
We have previously reported on the artist Richard Prince and the disputes surrounding his controversial works. In particular, we reported that a photographer, Donald Graham, had filed a complaint against Prince for copyright infringement by creating and exhibiting an Instagram-style screenprint based very closely on an original photograph taken by Graham entitled “Rastafarian Smoking a Joint, Jamaica”.
Graham was sufficiently enraged by what he perceived as the unlawful appropriation of his copyright that he posted his own comment on Instagram: “How to credit a work. ‘Rastafarian Smoking a Joint, Jamaica” © (1997) Donald Graham. #PrinceofAppropriation”.
It is unlikely that Prince was unduly ruffled by Graham’s barb, having thoroughly immersed himself in the choppy waters of US copyright in recent years with no resulting damage to his reputation; indeed, the reverse is true, Prince’s works are enormously popular.
In response Prince is relying on the argument that he has advanced successfully in the US courts before (and which we have summarised elsewhere), namely that his work is “transformative” and thus falls within the US “fair use” exception to copyright infringement. Prince is arguing that Graham is, in essence, seeking to re-litigate something which the courts have already adjudicated (albeit in respect of a photographer other than Graham). He also maintains that his – lawful – appropriation of Graham’s work will have no impact on the marketability of Graham’s work, something which is also relevant to the application of the fair use exception.
It is virtually certain that there will be further updates in this or related cases as Prince continues to test the boundaries of the US fair use exception.
Instagram is very much in the copyright news at the moment in the United States. It is reported that Groupon is facing a class action lawsuit over claims that it has allegedly taken users’ Instagram photographs without their consent and used them in its advertising; for example, if it is advertising a deal at a particular hotel or restaurant it will use a picture of someone tagged at that hotel or restaurant. There are arguments around whether tagging a business or its location on Instagram gives the business an implied licence to repost but the scope of such a licence, if indeed one exists all, is unclear.

US patent agents and privilege
In the UK, client/patent attorney communications benefit from privilege (the entitlement for a party to […]
In the UK, client/patent attorney communications benefit from privilege (the entitlement for a party to withhold evidence from production to a third party or the court). The position in the United States (where patent attorneys are called patent agents) is less clear-cut. A recent decision of the Federal Circuit has gone some way towards clarifying the position.
The case concerned patent infringement proceedings brought by Queen’s University against Samsung. During discovery, Queen’s refused to produce certain communications concerning the prosecution of the asserted patents that had been exchanged between its employees and patent agents. The issue of whether the communications were or were not covered by privilege was heard by the Federal Circuit.
The Court was divided. The majority considered that the communications were protected. While acknowledging that there was a presumption against recognising the existence of new forms of privilege (as this could be detrimental to the public’s general right to information), the Court considered that the unique role of a patent agent and the current realities of US patent litigation pointed towards recognising the existence of an independent patent agent privilege. In particular, the Court held that the preparation and prosecution of patent applications constituted the practice of law and, just as attorney-client privilege was justified by the need for clients to be able to have complete confidence that their communications with their attorneys would not be disclosed to anyone, the same privilege would be justified in relation to client communications with patent agents. It was reasonable for a client to expect that all communications relating to obtaining legal advice on patentability and legal services in preparing a patent application would be kept privileged. This conclusion was reinforced by the recognition that Congress had permitted patent agents to practise law when appearing before the US Trademark and Patent Office.
In the absence of patent agent/client privilege, the practice has developed of copying in attorneys on all communications to ensure that the communications remain privileged. The Court considered that this was both impractical and expensive.
The Court, however, placed an important restriction on patent agent/client privilege. This was that it is restricted to communications that are “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent in which the practitioner is authorised to participate”. For example, the provision of an opinion on validity or infringement regarding another party’s patent in connection with possible litigation would not be in furtherance of patent preparation and prosecution and would therefore not attract privilege.
This restriction considerably limits the scope of patent agent/client privilege yet this was not the ground upon which the third judge’s dissent was based. That dissent was based on the judge’s opinion that there was no basis at all for rebutting the presumption against the creation of a new category of privilege for patent agents and their clients.
Given the dissenting opinion in this case, a further appeal to the Supreme Court is not inconceivable. Unless and until that happens, however, communications between a patent applicant and their patent agent that are directly related to the preparation and prosecution of a patent are entitled to privilege. The difficulty will be in recognising when the line is crossed and, in grey areas, it is very likely that we will continue to see attorneys copied into correspondence.

Three stripes, two stripes and a risk of confusion
The Court of Justice of the European Union (CJEU) has ruled in favour of adidas […]
The Court of Justice of the European Union (CJEU) has ruled in favour of adidas in its opposition to an application for registration of a Community trade mark brought by Shoe Branding Europe [1].
The competing marks are shown here – the familiar three-stripes of the adidas brand and Shoe Branding’s two stripes.
The opposition was dismissed by OHIM’s Opposition Division and by the Board of Appeal, both of which held that adidias’ three-stripe mark could enjoy protection only against identical or virtually identical reproductions and that, in the instant case, there were sufficient differences to dispel any likelihood of confusion (notably the number of stripes, the sloping and the positioning). adidas successfully appealed to the General Court, which found that the Board was wrong to say the marks were dissimilar and that, further, given that adidas had shown reputation in the three parallel stripes, this was sufficient to support both a finding of a likelihood of confusion and trade mark infringement.
Shoe Branding appealed to the CJEU, which wholly endorsed the General Court’s reasoning, finding that the differences between the two marks were of a minor nature and “that the difference between two and three stripes placed on a shoe was not sufficient to affect the similarities arising from the configuration of the signs at issue and from their position on the side of the shoe”. The CJEU held that minor differences between the marks at issue would not be noticed by a consumer having an average level of attention and would not influence the overall impression produced by the marks on account of the presence of wide sloping stripes on the side of the shoe.
The case has generated a significant amount of online commentary with some posters suggesting that no self-respecting teenager would confuse the adidas three-stripe mark with a two-stripe alternative and others arguing that the case comes close to conferring on adidas a monopoly in striped footwear.
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[1] Case C-39615 P

Trade mark specifications
The amending Trade Mark Regulation [1] (the Regulation) came into force on 23 March. We recently […]
The amending Trade Mark Regulation [1] (the Regulation) came into force on 23 March. We recently summarised the principal changes.
One aspect of the Regulation to be aware of is that it codifies the approach taken by the EU Intellectual Property Office (in the pre-23 March days when it was still called the Office for Harmonisation of the Internal Market) regarding the scope of protection of trade mark specifications. The Regulation therefore confirms that for European Union trade marks (EUTMs) (formerly called Community trade marks), where a trade mark specification is drafted by reference to a Nice class heading or general terms, only those goods and services covered by the literal meaning of the class heading or general term will be protected.
Article 28(2) of the Regulation provides, under the heading “designation and classification of goods and services”, that “the goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought”. Proprietors of EUTMs applied for before 22 June 2012 that are registered in respect of an entire class heading have a six-month grace period (i.e. until 23 September 2016) to make an Article 28(2) declaration to amend the goods and services to include those which they really intended to cover, in addition to the class heading. After the grace period expires, EUTMs will be interpreted strictly according to the literal meaning of the terms included.
You should review your existing trade mark portfolio to see whether you have used class headings in your existing EUTMs declarations and whether you therefore need to make an Article 28(2) declaration. Please do not hesitate to contact us if you would like advice or assistance on this.
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[1] Regulation (EU) 2015/2424

Better the devil you know?
Who do you think of if you hear the name “Kylie”? We ask this question […]
Who do you think of if you hear the name “Kylie”?
We ask this question in the light of an application by Ms Kylie Jenner for registration of the mark KYLIE in the United States. Ms Jenner has applied for the registration in class 35, which covers advertising services, including advertising brands, goods and the services of others and endorsing/promoting the goods and services of others.
Ms Jenner, for those not au fait with these things, features in the American reality TV show, Keeping up with the Kardashians.
The application has been opposed by KDB Pty Ltd (KDB), an Australian-based company which represents Kylie Minogue. KDB maintain that to grant Ms Jenner’s application would cause confusion with, and dilute, the trade marks already registered in the name of KDB, including KYLIE MINOGUE DARLING and KYLIE in various classes, but not class 35. KDB also owns the domain name www.kylie.com. Its opposition is rather dismissive of Ms Jenner, calling her a “secondary reality television personality”.
From a neutral perspective, it would be good to see this dispute run its course, if not for more catty comments from the participants, then at least for an assessment of the likelihood of confusion between the two competing KYLIE marks and whether Ms Minogue’s brand will suffer detriment by virtue of registration of the KYLIE mark in Ms Jenner’s name.
As an aside, it is worth mentioning the “own name” defence in trade mark infringement proceedings. Under the Trade Mark Directive [1] and the Community Trade Mark Regulation [2] a trade mark proprietor cannot rely on a registered mark to prevent the use by a third party of their own name – provided they do so in accordance with honest practices in industrial and commercial matters – which, of course, has been the subject of some interesting case law. The position will change when the new Trade Marks Directive [3] comes into effect as the defence will be narrowed so that it will be available to natural persons only.
We will keep you updated with developments in this dispute between the two Kylies.
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[1] Directive 89/104/EC
[2] Council Regulation (EC) No 207/2009
[3] Directive (EU) 2015/2436

Is the term POMMIEBASHER offensive?
We reported in January on the decision of a US District Court ordering the removal […]
We reported in January on the decision of a US District Court ordering the removal of the Washington Redskins trade mark from the register on the grounds that the trade mark is disparaging to native Americans and therefore unlawful.
The non-registrability of offensive or disparaging remarks is common to many jurisdictions and the issue of where to draw the line has arisen recently in Australia in respect of the term “POMMIEBASHER”. Anyone who follows Ashes cricket will know that a POMME or POMMIE is a colloquial term used by Australians to refer to the English. It is not used in a respectful or appreciative sense.
In 2011, the Australian Trade Marks Office ruled that the word POMMIEBASHER – to denote someone who took pleasure in insulting Englishmen, particularly in a sporting context – was registrable as a trade mark and was not “scandalous”. The mark was registered in relation to clothing, beers and other beverages.
The successful applicant, a Peter Hanlon, then sought to register POMMIEBASHER as a business name. That application, however, failed with the Commonwealth Minister (the person responsible for approving company names) finding that the word was unsuitable for registration on the grounds that it was offensive. Mr Hanlon unsuccessfully appealed against that refusal.
The case highlights the different approaches in Australia that are taken to trade mark registrations and business name registrations. A business name may not be registered in Australia if it is offensive and the appellate body in this case made the point that a business name had a much wider application than the trade marked goods, with “exposure to persons who are not necessarily followers of cricket or rugby, or who do not understand the way in which the colloquial expression is frequently used”. The body added that a business name must also not be likely to be offensive to any section of the public. Evidence was adduced that, in fact, there were people who found the term offensive.
The legislative regimes for the registrability of actually or potentially disparaging or offensive marks varies from jurisdiction to jurisdiction, but irrespective of the precise legal language, different jurisdictions continue to throw up interesting cases concerning where the borderline should be drawn.

How much is substantial?
The High Court decision in England and Wales Cricket Board Ltd & Another v Tixdaq […]
The High Court decision in England and Wales Cricket Board Ltd & Another v Tixdaq [1] was concerned with the unauthorised reproduction and distribution of cricket highlights in the form of clips lasting eight seconds.
The claimants own the copyright in the broadcasts of most cricket matches played by the England cricket teams (men and women). The defendants captured clips of the claimants’ broadcasts and distributed them through their website, apps and social media platforms. The claimants instituted proceedings for copyright infringement.
The defendants denied infringement on the grounds that there activities were fair dealing for the purposes of reporting current events within the meaning of section 30(2) of the Copyright, Designs and Patents Act 1988 (the Act). This provides: “Fair dealing with a work (other than a photograph) for the purpose of reporting current events does not infringe any copyright in the work provided that (subject to subsection (3)) it is accompanied by a sufficient acknowledgement”. Subsection (3) states that “no acknowledgement is required in connection with the reporting of current events by means of a sound recording, film or broadcast where this would be impossible for reasons of practicality or otherwise”.
The first question for Arnold J to answer was whether the clips could be said to be a “substantial” part of the works in question. Under section 16 of the Act, the reproduction and distribution must be done to the whole of the work or a “substantial part” of it in order for there to be a finding of copyright infringement. The length of a cricket match between international teams can vary – a test match can last up to five days, a one-day international typically several hours and a 20-20 match, just a couple of hours. But even in the context of a rain-reduced 20-20 match, eight seconds is quantitatively not a substantial amount. However, it could be a substantial amount in qualitative terms – for example, if the clip showed a key wicket (as would be the case for a clip of a goal in a football match). The rationale for copyright protection in cases like this is to protect the broadcaster, or producer’s investment, as potential viewers are likely to watch a highlights package for the wickets, boundaries and key incidents – which was precisely the footage that the clips were showing. In other words, an eight-second clip could be a substantial amount for the purposes of section 16.
On the section 30(2) defence, Arnold J considered that a contemporaneous sporting event was a current event for the purposes of the statutory defence but that the clips were not reproduced and communicated for the purposes of reporting but rather for the purposes of sharing the clips with other users and for facilitating debates amongst users about the events depicted. Or, as Arnold J put it: “The clips were not used in order to inform the audience about a current event, but presented for consumption because of their intrinsic interest and value. Furthermore, although the fact that a news service is a commercial one funded by advertising revenue does not prevent its use from being for the purpose of reporting current events, I consider that the Defendants’ objective was purely commercial rather than genuinely informatory.” The section 30(2) defence was therefore not established and the claimants succeeded.
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[1] [2016] EWHC 575 (Ch)

Get back to where you once belonged
Under US law – the Copyright Act 1976 (the Act) – it is possible for […]
Under US law – the Copyright Act 1976 (the Act) – it is possible for artists to apply to reclaim copyright in their works 56 years after publication (provided the song was written before 1978, when the applicable provisions of the Act became effective). In order to do so, the artist must file a claim two to ten years before the expiry of the 56 years. There is no comparable provision in UK or EU law.
The John Lennon/Paul McCartney catalogue will qualify in this way from 2018. The catalogue is currently owned by Sony/ATV Music Publishing. Reportedly, however, last year McCartney began the process of regaining control of his half of the catalogue by filing a termination notice in respect of 32 songs. John Lennon’s half of the catalogue will remain with Sony/ATV, who reportedly reached a deal with Lennon’s wife, Yoko Ono, to that effect. All songs in the catalogue are credited to Lennon and McCartney regardless of who actually wrote them.
McCartney has previously expressed irritation at having to pay for the right to perform “Hey Jude”. He has reportedly long harboured a desire to regain copyright in the Beatles’ songs and was outbid by his former friend, the late Michael Jackson, who bought the ATV back catalogue – which includes the Beatles’ tracks – in 1985 for a reported US $47.5 million. Sony subsequently acquired the ATV catalogue.
This case recalls another case on which we recently reported – the successful litigation brought by the statutory heirs of the author of “Santa Claus is Comin’ to Town” to reclaim copyright ownership of the song, the rights of which had previously been assigned to EMI.